WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MAZARS v. David Martin, CMS

Case No. D2020-1560

1. The Parties

Complainant is MAZARS, Belgium, represented by TESLA Avocats, France.

Respondent is David Martin, CMS, France.

2. The Domain Name and Registrar

The disputed domain name <mazarsgroupe.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2020. On June 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On July 10, 2020, the Center sent an email communication to the Parties in English and French regarding the language of the proceeding. On the same date, the Center sent an email communication to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On July 13, 2020, Complainant filed an amended Complaint in English.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2020.

The Center appointed Roberto Bianchi as the sole panelist in this matter on August 26, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Mazars, created in France in 1940, is a worldwide group specialized in accounting, book-keeping, auditing business matters, legal advice and proceedings, tax, fiscal advice, and advice in business matters. Presently, Mazars has over 40,000 employees in over 90 countries.

Complainant owns International Registration No. 608854 for MAZARS, registered on July 30, 1993, renewed until July 30, 2023, covering support and consultancy to industrial and commercial companies, territorial and local communities, individuals, in the area of business management, accounting, accounting appraisal, auditing, consulting in connection with personnel issues, negotiation and settlement of commercial transactions and contracts; administration of commercial matters, in International Class 35; Support and consultancy on tax matters for industrial and commercial companies, local and territorial communities and individuals, in International Class 36; Support and consultancy for industrial and commercial companies, local and territorial communities, individuals, in connection with personnel training, book and review publishing, In International Class 41; Support and consultancy to industrial and commercial companies, local and territorial communities, individuals, relating to legal counselling; computer programming and design of computer systems and software, advice for purchasers in the field of computing, implementation and parameter setting of software packages, in International Class 42.

The disputed domain name was registered on November 19, 2019.

At the time of rendering this decision, the disputed domain name resolved to a website displaying a legend stating, “Interested in mazarsgroupe.com? Our Domain Broker Service may be able to get it for you. Find out how”. Under the title “Related links”, the webpage also showed the following links: “Jobs for All”, “Classification of the Contractor”, “Business Accounting Management”, “Classification of Contractor Works”, “Cybersecurity Deloitte” and “Auditing Firms”. These links, in turn, redirected to websites of businesses apparently unrelated to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical to the MAZARS registered trademarks, in which Complainant has rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Mazars was created in the 1940’s in France. Today, Mazars is a worldwide group specialized in accounting, book-keeping, auditing in business matters, legal advice and proceedings, tax, fiscal advice, and advice in business matters. Mazars has over 40,000 employees in over 90 countries.

One of the entities member of the Mazars group is “Mazars société d’avocats in France, registered with the Registry of commerce of Nanterre. Mazars société d’avocats owns the “www.avocats-mazars.com” website.

The disputed domain name was registered and is being used in bad faith. Since the end of 2019, Mazars is facing fraudulent behavior from third parties registering domain names that include the name and mark MAZARS. These third parties create email addresses based on such domain names, and then send emails to real clients of Mazars, including a signature reproducing the MAZARS trademark, and attaching fake invoices. Annexes 1 and 2 to the Complaint.

In 2020, one of the clients of Mazars informed Complainant that one such false invoice was sent from the <[email protected]> email address. However, Complainant does not have any “David Martin” within its teams. Such emails are fraudulent, and the documents therein attached are false. Unfortunately, some clients of MAZARS were confused and proceeded to make bank payments.

Complainant has initiated seven SYRELI proceedings, where the registrant of the domain name is sometimes mentioned as “David Martin”. See Procedure 2020-02057, relating to <mazarsgroupe.fr>, and Procedure 2020-02056, relating to <mazars-accountant.fr>. Annex 11 to the Complaint. In both cases, the facts are the same: false email addresses, false invoices and documents with the “Mazars” letterhead and false files.

In conclusion, the MAZARS trademarks are being used fraudulently. These acts are trademark counterfeiting, and the people behind them could be found criminally liable.

The Panel should note that Respondent has provided “CMS” as registrant organization. Such information is false, because CMS FRANCIS LEFEVRE is a famed law firm in France and worldwide. See “https://cms.law/en/int/”.

Respondent also has provided the address “12 rue Paris, Boulogne, Haute Seine, 92500” that looks like a real French address. However, “Haute Seine” does not exist. The correct name of the department is “Hauts de Seine”. Bad faith is also revealed here, as Mazars is also located in this French department. Such circumstances show Respondent’s knowledge of the “Big Four” and the market of big law firms in France. Thus, Respondent not only is presently using the disputed domain name in bad faith. Bad faith already existed when the disputed domain name was registered. This registration had the only purpose to allow Respondent to act illegally, once the domain name was registered.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting a printout taken from the corresponding official trademark database, Complainant has shown to the satisfaction of the Panel that it owns an international registration for MAZARS. See section 4 above.

The Panel notes that the disputed domain name consists of the MAZARS trademark with the addition of the common dictionary term “groupe” (French for “group”), and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that such kind of additions would not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the MAZARS mark, in which Complainant has rights.

B. Rights or Legitimate Interests

The Panel notes that according to the relevant WhoIs data, the registrant of record of the disputed domain name, i.e., Respondent, is “David Martin, CMS”. Since there is no evidence that Respondent is known by the disputed domain name, Policy paragraph 4(c)(ii) is inapplicable.

As to the use of the disputed domain name, Complainant has shown that a “David Martin” used the <[email protected]> email address to send emails to a client of Complainant, or of one of the companies of the Mazars group, requesting the payment of a false invoice for services rendered for an amount of EUR 33,500 (tax included). Annex 2 to the Complaint. According to Complainant, at least some invoices of this sort were paid by clients deceived by the scam. Whether or not the scam was successful, Complainant has proved that Respondent used the disputed domain name to impersonate Complainant. In addition, by employing the CMS acronym, Respondent also impersonated a famed international law firm.

In the Panel’s opinion, whatever the proper characterization of Respondent’s conduct under the applicable criminal law, its conduct is clearly illicit, and therefore, neither connected with a bona fide offering or goods or services under Policy paragraph 4(c)(i), or with a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to Policy paragraph 4(c)(iii). See WIPO Overview 3.0, section 2.5.1 (“[W]here a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”). See also section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”)

In the view of the Panel, Complainant’s allegations and evidence are sufficient for raising a prima facie case that Respondent lacks rights of legitimate interests in the disputed domain name.

Respondent failed to submit any explanation whatsoever for its conduct with regard to the disputed domain name. In addition, the present content of the website at the disputed domain name is a standard webpage displaying a list of “related links” resolving to websites of businesses unrelated to Complainant. Above this list, appears a legend suggesting that the disputed domain name may be for sale. Such content strongly suggests that Respondent has not envisaged any real use of the disputed domain name, apart from using it as a platform for illegal conduct.

Accordingly, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the Mazars company was founded in the 1940s, and that Complainant, a Belgian component of the group, owns an international registration for MAZARS since 1993, thus predating the registration of the disputed domain name by 27 years. See section 4 above.

Respondent’s impersonation of one of Complainant’s group of companies, including its use of Mazars’ official letterhead in its correspondence with clients of the Mazars group, clearly demonstrates that Respondent knew quite well of, and targeted Complainant at the time of registering the disputed domain name. The only active use of the disputed domain name appears to have been the impersonation of Mazars to deceive and induce inadvertent clients to pay fake invoices. Thus, it is clear that the registration of the disputed domain name was in bad faith.

Respondent’s actions, involving deceptive use of false invoices and impersonation of one of Complainant’s group of companies and of CMS, a renowned French law firm, are clear evidence of use in bad faith. Presently, a standard website at the disputed domain name merely displays a list of “related links” unrelated to Complainant, and a legend suggesting that the disputed domain name might be for sale. This shows that the only contemplated active use of the disputed domain name by Respondent was impersonation, fraud and deceptive scam. Lastly, the Panel notes that Respondent failed to respond to the Complaint.

In consequence, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mazarsgroupe.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: September 8, 2020